Our attorneys have decades of experience representing software companies, from startups to national and international software and service providers. We represent both licensors and licensees in the drafting and negotiating of software license and subscription agreements. We also assist our software clients in securing intellectual property rights and protecting those rights through litigation. We have also worked with numerous institutions on their acquisition of key elements of their information technology systems, including critical enterprise and human resources software.

With regard to patent prosecution, we have experience in a variety of software-based applications including encrypted vehicle-to-vehicle communications, anti-virus software that monitors computer systems by continuously generating cognitive fingerprints, back-end software systems for collaborative, real-time, simultaneous software development and big data analysis, and image processing and image recognition software systems. We have continued to successfully issue numerous software patents despite multiple patent-eligibility rejections under 35 U.S.C. 101.

We assist our software clients not only with patent prosecution and licensing, but also with:

  • Establishing ownership of work product created by employees and independent contractors
  • Copyright registration
  • Compliance with data privacy regulations
  • Website Terms of Use and related policies and notices
  • Patent and trademark portfolio building, including strategy, counseling and prosecution
  • Litigation and post-grant proceedings at the USPTO
  • Counseling on licensing and other IP-based transactions

Examples of our work include:

  • Representing the developer of a comprehensive Retail Management and Point of Sale software-as-a-service offering in protection and licensing of its software, as well as branding and trademark protection.
  • Representing two state judicial systems in licensing enterprise software to manage their operations.
  • Represented a company that provides software for intelligent video monitoring products that sued larger competitor.
  • Drafting a form of Software License agreement for the developer of Student Housing software and assisting with the transition from an on-premises license to a cloud-based service.
  • Serial representation of multiple private colleges and universities in at least five states in negotiating licenses of enterprise finance and human resources software and associated implementation services.
  • Represented large provider of IT management solutions in lawsuits in U.S. District Courts for the Eastern District of New York and the Northern District of California.
  • Resolving an ownership dispute for the developer of institutional laundry management software, helping the developer grow and sell its business, buy it back, then finally sell it again.
  • Defended a software company in a patent case brought by a competitor in U.S. District Court for the Eastern District of Texas.
  • Representing the developer of a cloud-based supplier information management system in preparing and negotiating its software-as-a-service agreement with multiple entities, including private and state-run educational institutions.
  • Represented many software companies over the years in patent litigations brought by numerous non-practicing entities.
  • Represented the developer of an encrypted vehicle-to-vehicle communications software system in selling its business to a multinational semiconductor and telecommunications equipment and software provider.

Firm Highlights

Matter

Management Audit

Verrill represented Emera in its 2016 distribution rate case before the Maine PUC. The case involved issues relating to significant new capital investments, including Emera's new customer information system and a controversial substation investment...

News

Maine's 'Thoughtful' and 'Aggressive' Response to COVID-19

On Wednesday, April 8, the Portland Regional Chamber of Commerce had its first ever virtual Eggs & Issues, moderated by Jim Cohen, volunteer board president of the Portland Community Chamber of Commerce and Verrill...

News

Available Take-Home Methadone Doses for Patients

Attorney Jim Cohen was mentioned in a Portland Press Herald article, "Methadone restrictions relaxed during pandemic, but not for everyone." The article describes the recent relaxed federal restrictions for the drug, due to the...

Blog

Commercial Co-Ventures: What You Need to Know During a Pandemic

Event

Central Maine Human Resources Association Chapter Meeting: Flexible Work Options

Employment and labor attorney Tawny Alvarez will be presenting at the Central Maine Human Resources Association Chapter Meeting. This month's chapter meeting will focus on flexible work options. Tawny will discuss how policy impacts...

Publication/Podcast

Should Health Care Employers Prepare for COVID-19 As A Work-Related Injury?

While we know that everyone is being bombarded with COVID-19 recommendations, advice, news, and data, another important issue to manage in the workplace is the possibility of COVID-19 infection, if acquired at work and...

Blog

Financial Institutions . . . In the News

Hundreds of business owners filing federal aid applications with lenders. ( Portland Press Herald 4.6.2020) Maine Securities Administrator Judith Shaw cautions to be careful of scammers. ( Central Maine 4.6.2020) New Dimensions Federal Credit...

Publication/Podcast

Executive Order Temporarily Modifies Requirements for In-Person Notarization and Acknowledgement in Maine

On April 8, 2020, Maine Governor Janet Mills signed an Executive Order titled “An Order Temporarily Modifying Certain In-Person Notarization and Acknowledgement Requirements.” The purpose of this Order is to enable citizens to execute...

Event

2020 OHRP Exploratory Workshop

Health care attorney Emily Fogler will be presenting at the 2020 OHRP Exploratory Workshop in the third session, discussing sharing responsibilities and protecting participants - redefining roles in the single IRB era. Stay tuned...

Matter

Management Inefficiency

Verrill represented Emera in its 2017 distribution rate case before the Maine PUC, which included: defeating Staff's proposed reduction to allowed return on equity for "management inefficiency;" approval of new expenditures, such as an...